Patent or Trademark?



I continue to receive questions prefaced with a statement “I have an idea and I don’t know if I should patent it or trademark it?”  Patent or Trademark.  The question is often stated in various ways but I think you get the idea.  There are fundamental differences between requirements and rights of patenting an idea and the requirements and rights achieved in trademarking an idea.  Let me try to clarify.



First, there are several types of patents, i.e., utility, design and plant patents.


The most common are utility patents.  Such patents protect an innovation, i.e., a novel product that performs a useful function.  Utility patents can also protect novel methods of making an object or performing a task.  A utility patent is limited in time.  The term of a utility patent is 20 years commencing from the date the non-provisional patent application is filed.  (There are provisional applications for patent that have a 12 month term.  The filing date of the provisional however does not, however, constitute the start of the 20 year patent term.)


For review, a provisional application is intended to be a simplified mechanism to make an initial claim for utility patent protection of an innovation.  It is intended to benefit the small entity or sole inventor.  What is important is that if a non-provisional application is not filed before the expiration of the 12 month term of the provisional, the provisional goes abandoned.  Since a provisional application is not published, it is possible that the innovation can remain secret provided the applicant/inventor has not publicly disclosed or used the invention.  See my previous articles on provisional patents.


The protection provided by a utility patent is distinct from protection provided by a trademark.  As just mentioned, a utility patent has a 20 year term and protects a method or article of manufacture.  A trademark can have an unlimited life of protection.  (A trademark must be renewed every 10 years.)  A trademark (or service mark) pertains to a “mark” or identifier for an object (item of manufacture) or a service.  As stated, it identifies the maker of the product or good or identifies the provider of the service.  It does not protect the underlying product or the service.  It is a utility patent that protects the unique features of the product or the method of providing the service.  See my previous article of What is a Trademark?.


For example, Apple® is the registered trademark of Apple Corporation.  The “mark” Apple identifies it as the manufacturer of computers, cell phones, etc.  The trademark does not protect innovative features of the Apple computers or cell phone.  Those innovations are protected by separate utility patents.


Patent or trademark?  If you have an identifier or mark that you want to identify services you perform or products you want to make and sell, then you need a trademark.  If there are some novel features of the products you are going to make and sell, then you want to investigate utility patent protection.  Similarly, if there are novel features of the services you are going to perform, then you may want to investigate a utility patent for the method of performing the services (or method of making the product you will be selling).


If your product has a novel appearance, then you may want to investigate obtaining a design patent.  The design patent has a term of 15 years from the date the patent is granted.  It can’t be renewed (unlike a trademark).  The key is that the design patent covers the novel and unique appearance of the object.  For example the rounded corners of the Apple iPhone are protected by a design patent.  The functional aspects of the iPhone, however, are not covered by the design patent.  Admittedly, the distinction is not always clear.


To provide some clarification, the functional value of a curved corner of an iPhone frame could be subject of utility patent.  The curved frame could advantageously not snag upon insertion or removal from a user’s pocket.  The unique appearance of the curved or rounded frame corner could be distinctive and identify the iPhone from a competitor.  If the competitor’s frame would cause a potential buyer to unintentionally buy the competitor cell phone when the buyer intended to buy an Apple iPhone, then there would be an issue of infringement of design patent.


If the competitor’s cell phone was marketed under the mark or identifier “eye Phone” or IPhone, in contrast to iPhone, such that the similar sounding or appearing competitor marks would cause a potential buyer to be confused in distinguishing the desired Apple phone from the competition, then there would be an issue of probable trademark infringement.


Patent or trademark?  The distinctions between utility patents protection and trademark protection are relatively clear.  The idea for a unique trade name will be the subject of possible trademark protection.  The idea for a unique or innovative feature of a mobile phone may be the subject of possible utility patent protect.


The distinction between a trademark and a design patent is less clear.  The appearance of a feature of a product that identifies the source of the product will be the subject of possible design patent protection.  Very similarly, the marking of the product that identifies the source of the product may be subject of trademark protection, i.e., product name.

© David McEwing 2020